Own brands and names: the Katy Perry case

Legal Affairs News Channel

Katy Perry has recently been news for participating in a space trip with a crew integrated exclusively by women, but also by a legal battle for the use of her name as a brand in Australia. Although the judicial process began in 2019, it still does not have a definitive decision. In the course of the litigation, opposite decisions have been issued: a first instance failed in favor of the Australian fashion designer Katie Taylor, while the Court of Appeal revoked that ruling and ordered the cancellation of her brand. Currently, the case is being reviewed by the Superior Court of Australia.

The controversy revolves around the use of the “Katie Perry” brand to identify products of class 25 (clothing). Katie Taylor, who registered her artistic name “Katie Perry” as a brand in 2009, later demanded a decade later to the American singer for the use of her “Katy Perry” brand in merchandising products of class 25, sold during her tours in Australia.

As well as the case of “Katie Perry” brands vs. “Katy Perry”, there are numerous marking disputes around the world for the use of proper names, especially when it comes to names of famous people or homonyms. In the Andean field, these situations have been subject to regulation. Next, some key aspects about the relationship between brands and proper names in our regulations:

In Colombia, it is possible to register a brand composed of its own name?

Yes, whenever it is distinctive, it does not generate a risk of confusion or association in the consumer and does not affect the identity or prestige of natural persons outside the holder, unless they have their consent.

“Pibe Valderrama”, “Rigo Uran”, “Nairo Quintana” and “Egan Bernal” are not just names of prominent Colombian athletes; They also correspond to registered trademarks to identify a diversity of products and services. These brands enjoy a high level of distinctiveness, since they are easily associated with recognized and outstanding people, in this case, in the sports field.

If I have a common name, can I register it as a brand?

The brands composed of names are subject to the same registration process as any other. If there are already registered trademarks with that same name or if the name corresponds to an expression of common use in the requested class, the sign will not be registered, unless distinctive elements are incorporated that allow their individualization and differentiation.

Can I register my name as I mark if I call myself the same as a famous person?

This is precisely the case of the “Katy Perry” brand. If it had been submitted in Colombia and, by the date of the application, the artist with that name was already recognized, the brand would have been denied. Decision 486 of 2000 enshrines as a cause of irregistrability that the sign affects the identity or prestige of legal or natural persons, different from the applicant or identified by the public as a person other than the applicant, especially, in the name of the name, surname, pseudonym, image, among others, except that consent is provided.